Home

27Jul 2022

{4 minutes to read}  To further support the acceleration of innovations in the fight against COVID-19, the United States Patent and Trademark Office (USPTO or Office) is extending the modified COVID-19 Prioritized Examination Pilot Program, which provides a prioritized examination of certain patent applications. Requests that comply with the pilot program’s requirements and are filed on or before December 31, 2022, will be accepted. The USPTO will evaluate whether to terminate or further extend the program during this extension period.

The COVID-19 Track One Notice indicated that an applicant may request a prioritized examination without payment of the prioritized examination fee and associated processing fee if:

  1. The patent application’s claim(s) covered a product or process related to COVID-19.
  2. The product or process was subject to an applicable Food and Drug Administration (FDA) approval for COVID-19 use, and 
  3. The applicant met other requirements noted in the COVID-19 Track One Notice.

As of May 16, 2022, 261 patents had been issued from applications granted prioritized status under the pilot program. The average total pendency, from the filing date or later submission of a request for continued examination, to the issue date for those applications was 280 days. The shortest pendency from filing to issue date for those applications was 75 days.

The Third Extension Notice indicated that the pilot program would expire on June 30, 2022. In the current notice, the USPTO is further extending the pilot program by setting the expiration date as December 31, 2022. The Office will evaluate whether to terminate or further extend the program during this fourth extension period. If the USPTO determines that an additional extension of the pilot program is appropriate, the Agency will publish a subsequent notice to the public. 

COVID-19 Prioritized Examination Pilot Program Description:

  • Applications must contain one or more claims to a product or process related to COVID-19.
  • Such claimed product or process must be subject to an applicable Food and Drug Administration (FDA) approval for COVID-19 use.
  • The request must include a certification that the applicant qualifies for either small or micro entity status and an executed Application Data Sheet (ADS) meeting the requirements of 37 CFR 1.53(f)(3)(i).
  • Applicants must file a grantable request under this initiative using the USPTO patent electronic filing system (EFS-Web or Patent Center) if filing the request in a utility application.
  • Applicants should use Pilot Program Form PTO/SB/450 to request participation in the pilot. 

The pilot is open to non-continuing, original, nonprovisional utility or plant patent applications filed with an acceptable request to participate original, nonprovisional utility or plant applications making a benefit claim under 35 U.S.C. 120, 121, or 365(c) to one prior nonprovisional application or one prior international application designating the United States filed with an acceptable request to participate utility or plant applications, including the national stage of a prior international application, in which an acceptable request to participate has been filed with or after a request for continued examination (RCE) if no prior RCE was granted prioritized examination status. 

The fees set forth in 37 CFR 1.17(c) and (i)(1) are not required to participate in the program. Any application that claims the benefit of the filing date of two or more previously filed non-provisional U.S. applications or international applications designating the United States under 35 U.S.C. 120, 121, or 365(c) is not eligible for participation in this pilot but the applicant may request prioritized examination under 37 CFR 1.102(e).

Benefit claims to one or more prior provisional applications under 35 U.S.C. 119(e) or foreign priority claims under 35 U.S.C. 119(a)-(d) or (f) will not cause a non-provisional application to be ineligible for this pilot.

Silvia Salvadori, PhD Silvia Salvadori, PhD
Salvadori Law
Silvia@salvdorilaw.com
Please contact me at silvia@salvadorilaw.com with questions or comments.
30Jun 2022
business man with idea lamp on his hand,Idea concept

{1 minute to read} Inventors and small businesses, that meet certain financial thresholds and other criteria, may be eligible for free legal assistance in preparing and filing a patent application. The Patent Pro Bono Program is a nationwide network of independently operated regional programs that match volunteer patent professionals with financially under-resourced inventors and small businesses for the purpose of securing patent protection. Each regional program provides services for residents of one or more states.

Requirements

In general, the requirements are:

Income:

The inventors’ gross household income should be less than three times the federal poverty level guidelines, though some regional programs may have different criteria.

Knowledge

The inventors must demonstrate knowledge of the patent system in one of two ways:

Invention

The inventors must be able to describe the particular features of their invention and how it works.

Each of the regional programs may have additional specific requirements for admission.

Silvia Salvadori, PhD Silvia Salvadori, PhD
Salvadori Law
Silvia@salvdorilaw.com
Please contact me at silvia@salvadorilaw.com with questions or comments.
18May 2022
Document Automation

{2 minutes to read}  In December of last year, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) to seek public feedback on a proposal to revise the rules of practice for issuing patents electronically. Under the current rule (37 CFR 1.315), the USPTO is required to deliver or mail a patent “upon issuance to the correspondence address of record.” Under the proposed changes, the USPTO would no longer physically deliver the patent by mailing it but would issue the patent electronically via their patent document viewing systems (i.e., Patent Center and Patent Application Image Retrieval (PAIR)). Patentees would also be able to download and print their electronically issued patents through these systems.

Continue reading
18Apr 2022

Per guidance issued by the U.S. Department of State, the United States Patent and Trademark Office (USPTO) has terminated engagement with officials from Russia’s agency in charge of intellectual property, the Federal Service for Intellectual Property (commonly known as Rospatent), and with the Eurasian Patent Organization. The USPTO has also terminated engagement with officials from the national intellectual property office of Belarus.

Continue reading
22Mar 2022

On January 6, 2022, the United States Patent and Trademark Office (USPTO) announced a new pilot program: The Deferred Subject Matter Eligibility Response (DSMER). This pilot program is designed to evaluate how deferred applicant responses to subject matter eligibility (SME) rejections affect examination efficiency and patent quality as compared to traditional compact prosecution practice.

Continue reading
30Nov 2021

In a recent case, Eli Lilly and Co. v. Teva Pharmaceuticals International GmbH, the Federal Circuit upheld the validity of Teva’s patents directed to specific methods of treatment using an “effective amount” of certain antibodies. The court agreed with the Patent Trial and Appeal Board (PTAB) that the claim preambles were limiting, and that obviousness required proof of a reasonable expectation of success in achieving the recited purpose.

Continue reading